Dubai International Financial Center or DIFC enacted a new intellectual property (IP) law, which supplements the existing federal IP laws enforced within the UAE. The DIFC intellectual property law covers all of the aspects of intellectual property rights enforcement and introduces the channels for enforcement.
Are UAE intellectual property rights recognized in DIFC?
The new IP law of DIFC provides recognition for all UAE-registered IP rights, including UAE-registered utility certificates, patents, trademarks, copyrights, industrial drawings and designs, trade secrets, and trade names.
Who has jurisdiction over IP Infringement cases in DIFC?
The IP commissioner, as well as the DIFC Courts have jurisdiction over the execution and implementation over the DIFC IP law, as well as any legislation that is issued with regards to administrative penalties. Decisions of the IP Commissioner can be appealed by submitting an application to DIFC Courts.
The DIFC Courts have jurisdiction as well in issuing injunction orders. They can award damages that result from infringement of DIFC IP law.
What are the penalties for DIFC IP infringement?
The new DIFC IP law imposes substantial administrative fines of USD 5,000 to USD 40,000, which is approximately AED 20,000 to AED 150,000 for infringement of IP rights. Anyone who attempts in using any well-known trademark without getting proper consent and authorization from the registered owner will face a fine of AED 55,000 or USD 15,000. The manufacturing, importing, exporting, or selling of products or processes which are protected by a utility certificate or patent or products that are obtained with the use of protected procedures will result to an administrative fine of AED 130,000 or USD 35,000.
What is reversal burden of proof for infringement cases in DIFC?
As per the new DIFC IP legislation, where the patent has been awarded for a process for product manufacturing provided the patent’s registered owner is able to show substantial likelihood for a product to be manufactured by an alleged infringing party with the use of such process, burden of proof for the infringement case will be reversed and will fall on the alleged infringing party. The infringing party has to have proof that products aren’t manufactured with the use of a patented process.
The new intellectual property legislation of the DFIC also created the new post, IP Commissioner. The person will be responsible with IP law enforcement, including dispute resolution in DIFC. It is the DIFC Commissioner who will also impose fines for IP rights infringement cases. An IP Commissioner can extend the period of appointment for a period of three years.
How does the new DIFC IP law affect inventions and creations of employees?
Reflecting its aim in fostering innovation, DIFC’s new IP law gives clarification on the legal position of the financial center concerning ownership of inventions and copyrights by employees. The DIFC intellectual property legislation presumes the employer ownership for copyright with respect to works that are created by employees within scope of employees’ employment or during the use of the knowhow and resources of the employer.
This is opposite toe the position of UAE Federal Copyright Legislation wherein the ownership of copyright of employer isn’t presumed, including the ability in assigning ownership for future works which is restricted. Similarly, DIFC intellectual property law provides employer patent ownership which is subject to inventions which are created within scope of employment of an employee.
In case an invention is born outside of scope of employment; however, closely relates to the business of the employee’s employer and was created using the knowhow and resources of the employer, the invention will belong to the employee’s employer. in such case, an employer has to be aware of the employee being entitled to fair compensation which is for acquiring ownership of the employee’s invention. The employer also has to take into account renumeration for the employee, the economic value of the invention, as well as the benefits which will be gained by from the invention.
What works aren’t protected by copyright under DIFC IP legislation?
The following aren’t provided with copyright protection in DIFC:
- Ideas, methods for doing business, procedures, basic principles, mathematical expressions
- Official documents, regardless of source or language, including provisions of law, decisions, regulations, court judgments, intentional conventions, decisions issued by the administrative committees related to court matters, and awards of arbitrators
- Works which have fallen in public domain from lapse of the copyright protection provided any foregoing is considered as eligible for protection when there’s an innovative element with the way it’s arranged or compiled
- Current events news and issues strictly for media coverage
These are the key aspects you should know about the new DIFC intellectual property law. The new law was drafted in order to align with the international treaties, including Agreement on Trade Related Aspects for Intellectual Property Rights. If you want to know more about intellectual property protection in DIFC and UAE, call experts like HHS Lawyers in Dubai!
